The last time design issues were argued in the UK’s highest court (2011) the focus of attention was the Stormtrooper helmet from the iconic Star Wars films. Since then, the force has been with LimeGreenIP: back in Spring 2014, we predicted that a case all about the design of a range of children’s luggage would also make it all the way to the Supreme Court.

It turns out we were right. Next week the UK’s Supreme Court will hear just its second designs case, in an appeal to decide the question: “What significance attaches to the fact that a graphical representation of a Community registered design shows no surface decoration?” And you can watch the action, streamed live here on Tuesday, 3 November.

LimeGreenIP will be back with more news on this case soon, but meantime here’s the story so far.

The TRUNKI range of ride-on suitcases for young children has been enormously successful since they were first marketed in 2004. Magmatic Ltd, the owners of the Community Registered Design for the TRUNKI (shown below) estimate that in 2011 approximately 20% of all three to six year olds in the UK had one.

One view of the TRUNKI design, as registered

PMS International Ltd, a manufacturer in the discount toy sector of the market, recognised the TRUNKI’s qualities and also spotted a potential gap in the market for a discount version of the TRUNKI. In 2012, PMS started to sell their own range of ride-on suitcases, which they called the Kiddee Case.

Kiddee Case design (animal version)

Magmatic sued PMS for infringement of the TRUNKI design and also for infringement of copyright in the artwork for its packaging. In July 2013, the High Court ruled that the Kidee Case did infringe Magmatic’s registered design, but did not infringe its packaging artwork copyright. PMS appealed, arguing that the judge (Mr Justice Arnold) had wrongly interpreted the TRUNKI design and improperly excluded from consideration various aspects of the design of the Kidee Case. The Court of Appeal agreed with PMS.

No infringement

The scope of protection of a Community (and also a UK) registered design includes “any design which does not produce on the informed user a different overall impression“[1].

In this case the Court of Appeal held that the impression conveyed to the informed user by the Kiddee Case was very different to the TRUNKI design.

Here, the “informed user” – that is to say the legal construct through whose eyes the registered design and the Kiddee Case design had to be viewed – was, the court said, a parent, carer or relative of a child from 3 to 6 years old. This was because the products in question were likely to be selected and bought by an adult, though perhaps at the request of a child, and then used by a child under supervision. That informed user, the appeal court accepted, would see some similarities at a general level but would also see many significant differences.

Taking these all together, the appeal court found that the overall impression created by the TRUNKI design “is that of a horned animal. It is a sleek and stylised design and, from the side, has a generally symmetrical appearance with a significant cut away semicircle below the ridge. By contrast the design of the Kiddee Case is softer and more rounded and evocative of… an animal with floppy ears. At both a general and a detailed level the Kiddee Case conveys a very different impression.” So the Kidee Case design did not infringe.

But why did the Court of Appeal overturn what was essentially a finding of fact by the judge at first instance; something the court has warned against, unless compelled to do so? The court identified two errors by the judge in applying the legal principles to the facts in this case which opened the door to it forming its own view as to the overall impressions of the two designs.

First, when comparing the unadorned, monochrome, 3D images of the TRUNKI design with the Kidee Case he had wrongly eliminated from consideration the decoration on the Kiddee Case. This decoration, the court said, significantly affects how the shape strikes the eye and the overall impression it gives.

Second, the judge ought to have taken into account the “colour contrast” between the wheels and the body of the TRUNKI design when assessing the overall impression of the two designs. This was a striking feature of the TRUNKI design which was simply not seen in the Kiddee Case design. In doing so the Court of Appeal confirmed its earlier case law, that an accused design cannot avoid infringing a monochrome registration merely by being rendered in a colour or colours. However, the court clarified that where representations are shown in monochrome, contrasts between parts of the design may result in a striking feature of that design. Here, there was a distinct contrast between the wheels (and the strap) of the TRUNKI design and the rest of the suitcase.

This decision is bound to cause concern amongst design owners who have (sensibly) filed black and white CAD representations of their designs, but which show areas of contrast. Whilst filing only line drawings may seem a more attractive approach to take following this judgment, this will not negate problems resulting from any pattern or other decoration applied to the surface of the accused design being taken into account, especially where there are already slight differences in the physical shape of the article (as there were here). But, each case will of course turn on its own facts and so it is difficult to predict how much of a difference this aspect of the case will make in practice. More certain, is that these are issues ripe for further review by the UK’s Supreme Court and the EU’s Court of Justice.

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